Procedure To Acquire
The procedures to acquire such a registration are set forth in the TBMP Chapter 1100. They are initiated when a concurrent use application is submitted to the USPTO, which will initiate a concurrent use proceeding to determine if the applicant is entitled to such registration. An existing application that has been denied registration because of a conflict with an existing mark may be converted into a concurrent use application against that existing mark. In either case, the applicant must assert that its mark was used in commerce before the owner of the existing registration, called the "senior registrant", had filed its own application for registration. The applicant must also demonstrate that the marks can both be used in their specific geographic areas without causing a likelihood of confusion.
The USPTO will contact the senior registrant to inform that party of the claim against their mark. The proceeding in which the respective rights of the parties are determined is like a trial in which the applicant must submit evidence showing that the applicant had adopted the mark in good faith, that the applicant had adopted the mark prior to the senior registrant's date of registration, and that the confusion is not likely. The senior registrant may present evidence to the contrary, in order to prevent the loss of control over the use of the registered mark in the applicant's claimed territory. Both parties may take discovery in the form of requests for admission, interrogatories, requests for production, and depositions. As with a regular trial, the TTAB may be called upon to resolve disputes over whether discovery requests are overbroad, and whether discovery responses are inadequate.
The senior registrant in such a proceeding has ample incentive to oppose the grant of a concurrent use registration, because a registered trademark is presumed to apply throughout the entire United States. Thus, the grant of a concurrent use registration carves out some geographic territory from the senior registrant's exclusive control.
As 15 U.S.C. § 1052 (d) indicates, a concurrent use registration may also be issued "when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce." As a matter of right, the TTAB will issue such a registration pursuant to a court order that an applicant has the right to use its mark in certain geographic area. Where a court has issued such an order, a concurrent use proceeding is not needed, as evidence has already been taken in the court proceeding, and the rights of the parties have already been determined.
Most concurrent use proceedings result in a legal settlement between the parties. Frequently, one party will surrender its concurrent use claim and instead receive a trademark license from the other party. In other situations, each party may agree to geographic limitations on its use of the mark at issue, which the TTAB will honor if the settlement stipulates to facts which show that no confusion is likely. A benefit of such an agreement is that the parties can agree to terms beyond the scope of the TTAB's decision, such as specific restrictions on time and place of advertising, or modifications to the appearance of either mark. However, irrespective of the agreement reached, the TTAB must still make an independent finding that no consumer confusion is likely to result from the concurrent use registration. Even if both parties assert that no confusion is likely, the TTAB may still make findings of fact which demonstrate that confusion is likely, and deny registration to the junior user of the mark.
A pivotal factor in assessing the likelihood of confusion in such a circumstance "is whether the parties whose marks are in question have agreed, in some form, to memorialize methods of avoiding confusion." In that case, the court held that such an agreement "is viewed in light of the parties’ interests and the prevailing marketplace", further stating:
| “ | The weight to be given more detailed agreements should be substantial. Thus when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not. | ” |
Furthermore, the issuance of concurrent use registrations need not prevent either party from engaging in advertising or other activities which might result in the incidental publication of one registrant’s mark in the territory of the other registrant. In the Amalgamated Bank case, the Federal Circuit found acceptable a term in the agreement that "nothing in this agreement will preclude Amalgamated New York from conducting advertising which might enter in the State of Illinois or from dealing with customers who happen to be located in the State of Illinois." Courts have similarly held that a concurrent use registration does not curtail either party from advertising over the Internet, particularly where the junior user includes a disclaimer of some form on their website.
Read more about this topic: Concurrent Use Registration
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